The horizon looks Gray for UWA

On 12 February we reported that UWA had failed in its application for special leave to appeal the Full Federal Court’s decision in University of Western Australia v Gray [2009] FCAFC 116.  The High Court’s refusal to hear an appeal means that the Full Federal Court’s decision (that Dr Gray owns the IP in cancer-fighting microspheres developed over a period which spanned his employment by UWA) stands.

Before Justices Gummow, Hayne and Heydon, UWA argued that in accordance with the rule in Sterling v Patchett [1955] AC 534 terms should be implied into contracts of employment to the effect that universities were entitled to ownership of inventions created by academic staff in the course of their employment; and further, that universities should not be distinguished from other kinds of employers in this regard.

Counsel for Dr Gray successfully argued that the answer to these questions could only arise if the findings of fact by the courts below, regarding the issue of inventorship, could be overturned.  UWA failed to show that the contributions made by Dr Gray, which it argued should be judged by looking at the specifics of the claims rather than the inventive concept, were all made during his employment by UWA.  Justice Gummow thus concluded that:

The questions of law which the applicant seeks to agitate on an appeal to this Court would arise upon a contrary view of the sequence of events to that taken by the primary judge and by the Full Court.  That fact finding does not give rise to any special leave ground.  This is not an appropriate occasion to consider what are said to be the questions of law that arise in this litigation.

During submissions, Justice Gummow commented: “On a practical level the lesson of this case may be there is a need for express arrangements”.

Click here for a copy of the High Court transcript of proceedings.

About the Author

James Ellsmore
James is a senior associate with King & Wood Mallesons' Intellectual Property team in Sydney. James assists clients to resolve intellectual property disputes, with a particular focus on patents, pharmaceuticals and the life sciences. He has acted for a variety of clients in matters concerning patent infringement and revocation proceedings in the Federal Court of Australia, patent opposition proceedings before the Commissioner of Patents, and matters arising from patent licence and technology agreements. James also has experience in the preparation of commercial, R&D and IP agreements for leading universities, research organisations and pharmaceutical companies. He also advises clients on regulatory issues affecting clients in the industrials, consumer and health sectors.
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